`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`CARDIOCOM, LLC
`Petitioner
`v.
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`_____________________
`CASE IPR2013-00468
`Patent No. 7,516,192
`_____________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
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`Patent Owner Robert Bosch Healthcare Systems, Inc. (“Bosch”) hereby
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`opposes Petitioner Cardiocom, LLC’s (“Cardiocom”) Motion to Exclude Evidence
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`(Paper 57, “Mot.”).
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`I.
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`INTRODUCTION
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`Through its motion, Petitioner Cardiocom seeks to deprive the Board of
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`secondary considerations evidence that plays a “critical role in the obviousness
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`analysis.” Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013).
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`Despite admitting that there was a long-felt need for the claimed inventions of U.S.
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`Patent No. 7,516,192 (“the ’192 patent”) in deposition, Cardiocom’s expert has
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`failed to affirmatively identify any secondary considerations evidence
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`demonstrating that the claims of the ’192 patent are obvious. Rather, Cardiocom
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`asks the Board to exclude the substantial evidence of secondary considerations that
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`Bosch and Dr. David have submitted. Notably, Cardiocom does not challenge the
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`reliability and authenticity of the underlying evidence. Instead, Cardiocom raises
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`several technical arguments that are meritless as a matter of law.
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`First, Cardiocom seeks to exclude Dr. David’s opinions on secondary
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`considerations, premising its argument on the untenable position that secondary
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`considerations evidence requires an “element-by-element” claim chart analysis.
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`With no Federal Circuit law requiring such an analysis—and certainly none cited
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`by Cardiocom—there is no basis for Cardiocom’s requested relief. Moreover,
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`Cardiocom and Dr. Stone have not identified a single element of the ’192 patent
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`claims that is purportedly not related to the secondary considerations evidence.
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`Second, Cardiocom moves to exclude Bosch’s secondary considerations
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`evidence as allegedly inadmissible hearsay. Cardiocom is wrong. The challenged
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`evidence is not hearsay. See Hynix Semiconductor Inc. v. Rambus Inc., No. C-00-
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`20905 RMW, 2009 WL 112834, at *14 (N.D. Cal. Jan. 16, 2009), aff’d, 645 F.3d
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`1336 (Fed. Cir. 2011). And, even if it were, Dr. David is entitled as an expert to
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`rely on hearsay evidence to form his opinions.
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`II.
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`STATEMENT OF FACTS
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`Cardiocom submitted its petition in this proceeding on July 24, 2013,
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`accompanied by Dr. Stone’s original declaration. Paper 1; Ex. 1008. Neither the
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`petition nor Dr. Stone’s declaration contained any discussion of secondary
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`considerations of non-obviousness. See generally id. And Dr. Stone has
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`confirmed on numerous occasions that he did not consider any such evidence
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`before concluding that the claims of the ’192 patent were obvious:
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`Q. So you made up your mind that the claims of the ’420, ’186 and
`’192 patents were invalid as obvious before you considered any
`evidence of secondary considerations?
`[A.] That’s -- that pretty well states the case.
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`Ex. 2069, 784:15-21; see also id. 783:1-15. In fact, Dr. Stone even testified that,
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`had he considered such evidence, his opinions on invalidity may ultimately have
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`come out the other way. Ex. 2009, 258:6-19.
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`In response to the petition, Bosch submitted the declaration of Dr. David,
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`wherein he considered and analyzed numerous pieces of secondary considerations
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`evidence demonstrating the non-obviousness of the ’192 patent. Dr. David
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`testified as to the existence of at least the following commercial secondary
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`considerations for the ’192 patent: (1) the invention’s commercial success;
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`(2) long-felt but unresolved needs; (3) praise by others; (4) teaching away by
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`others; and (5) copying of the inventions by others. See Ex. 2007 ¶¶ 70-110; see
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`also Exs. 2010-2057.
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`Dr. David testified that a nexus exists between the claims of the ’192 patent
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`and the secondary considerations evidence, such as commercial success. See, e.g.,
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`Ex. 2007 ¶¶ 73, 88-91, 94-96, 107-110. By way of example, Dr. David testified
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`that the “substantial, long lasting commercial success” of Bosch’s products were
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`linked to the scripting features that are “related to the inventions of the ’192
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`patent.” Id. ¶ 88. Dr. David similarly testified that the VA requirements that were
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`copied from Bosch’s Health Buddy product were “driven by the scripting features
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`of the Bosch ’192 patent.” Id. ¶ 107.
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`In reply, Cardiocom and Dr. Stone did not provide any contrary evidence of
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`secondary considerations. Paper 52; Ex. 1022. In fact, Dr. Stone admitted over
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`and over again that there existed secondary considerations of non-obviousness,
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`including long-felt need and demand. See, e.g., Ex. 2009, 27:1-9, 34:14-35:1,
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`49:17-20, 59:22-60:1, 76:18-77:5, 90:21-91:24, 103:4-6, 438:22-439:3. Rather
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`than rebutting this evidence of non-obviousness, Cardiocom and Dr. Stone chose
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`only to criticize Dr. David’s opinions and evidence, faulting Dr. David for not
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`conducting an “element-by-element” claim analysis for the secondary
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`considerations evidence. Mot., 4; Ex. 1022 ¶ 63; Ex. 2069, 792:18-793:9. As Dr.
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`Stone admitted at deposition, however, Cardiocom’s “element-by-element” test is
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`cut out of whole cloth as it has no basis in the case law. See Ex. 2069, 795:2-21.
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`III. ARGUMENT
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`“Objective evidence of nonobviousness is an important component of the
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`obviousness inquiry because ‘evidence of secondary considerations may often be
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`the most probative and cogent evidence in the record. It may often establish that
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`an invention appearing to have been obvious in light of the prior art was not.’”
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`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,
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`699 F.3d 1340, 1349 (Fed. Cir. 2012) (citation omitted). Where properly
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`presented, evidence of secondary considerations must be considered. Plantronics,
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`Inc. v. Aliph, Inc., 724 F.3d 1343, 1355 (Fed. Cir. 2013).
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`Cardiocom bears the burden of demonstrating obviousness, including the
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`burden of presenting secondary evidence supporting its non-obviousness case in its
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`petition. Gnosis S.P.A. v. South Alabama Med. Sci. Found., Case IPR2013-00116,
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`Paper 61, at 2-3 (P.T.A.B. Mar. 12, 2014) (“[T]he secondary considerations
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`evidence is part of the body of evidence from which Petitioners must establish that
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`a preponderance emerges, in order to prove unpatentability of the patented
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`claims.”). Cardiocom admittedly elected not to present any secondary
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`considerations evidence in its petition. See Ex. 2069, 784:15-21. Having failed to
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`even try to carry its burden with respect to secondary considerations, Cardiocom
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`now invites error by asking the Board to ignore the evidence of secondary
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`considerations presented by Bosch and thus skip a necessary step in the
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`obviousness analysis.
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`A.
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`Cardiocom Has Fundamentally Misstated the Secondary
`Considerations Analysis.
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`Contrary to Cardiocom’s assertions, a prima facie case supporting nexus
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`between secondary considerations evidence and patent claims requires simply that
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`“the patentee shows both that there is commercial success, and that the thing
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`(product or method) that is commercially successful is the invention disclosed and
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`claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing, Ltd., 851
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`F.2d 1387, 1392 (Fed. Cir. 1988). “A requirement for proof of the negative of all
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`imaginable contributing factors would be unfairly burdensome, and contrary to the
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`ordinary rules of evidence.” Id. at 1394. That prima facie test was met in Demaco,
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`through evidence of the admitted success of the patented invention. Id. Dr. Stone
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`does not dispute that the Health Buddy product practiced the claims of the ‘192
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`Patent.
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`Once the prima facie test is met, it falls to the patent challenger (Cardiocom)
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`to “adduce evidence to show that the commercial success was due to extraneous
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`factors other than the patented invention, such as advertising, superior
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`workmanship, etc.” Id. at 1393. At bottom, Cardiocom’s motion to exclude fails
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`because it seeks to foist on Bosch a burden that Cardiocom has borne all along—to
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`“adduce evidence” (through an “element-by-element” analysis or otherwise)
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`demonstrating that the commercial success and other secondary considerations
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`factors identified by Dr. David were due to something other than the claimed
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`inventions of the ’192 patent. Cardiocom has never “adduce[d]” any such
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`evidence and therefore its criticisms of Dr. David ring hollow.
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`B.
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`Dr. David Established a Sufficient Nexus Between the Secondary
`Considerations Evidence and the Claimed Invention.
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`There is no dispute that evidence of secondary considerations must be tied to
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`the claimed inventions of the ’192 patent.1 In re GPAC Inc., 57 F.3d 1573, 1580
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`1 Bosch has also provided evidence of secondary considerations in related
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`proceedings concerning U.S. Patent Nos. 7,840,420 and 7,921,186. While there is
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`overlap in the exhibits of secondary considerations for the ’192, ’420 and ’186
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`patents, Dr. David provides testimony in each proceeding that ties the evidence to
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`the particular features claimed in the patent at issue in the proceeding.
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`(Fed. Cir. 1995). But, in moving to exclude, Cardiocom seeks to impose on Bosch
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`and Dr. David a greater burden of demonstrating sufficient nexus than has ever
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`been required by the Federal Circuit, i.e., the comparison of secondary
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`considerations evidence to the ’192 patent claims on an “element-by-element”
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`basis. See, e.g., Mot., 4; Ex. 1022 ¶ 63. Notably, neither Cardiocom nor Dr. Stone
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`cite a single case to support this supposed test. Indeed, if Cardiocom’s “element-
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`by-element” test were accepted, the use of secondary considerations evidence in
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`any patent case would effectively be eliminated, as articles, marketing materials,
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`and the like rarely—if ever—describe the features claimed in patents on an
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`“element-by-element” basis.
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`Cardiocom’s arguments to the contrary, Dr. David has provided testimony
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`establishing a sufficient nexus between the secondary considerations evidence he
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`considered and the claimed inventions of the ’192 patent. See Section II, supra;
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`see also Ex. 2007 ¶¶ 73, 88-91, 94-96, 107-110. Moreover, in addition to Dr.
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`David’s supporting testimony, many of the exhibits of secondary considerations
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`specifically mention the scripting features that are claimed in the ’192 patent. E.g.,
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`Ex. 2020 (“Care Composer allows the service’s users to design or modify protocols
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`and assists them in defining patient health status data and designing disease-
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`specific messages.”); Ex. 2023 (“Every day the Health Buddy asks patients a series
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`of questions about their weight, blood pressure, medication and specific aspects of
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`their conditions.”); Ex. 2055 (citing VA staff testimony about working with Health
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`Hero “to develop targeted questionnaires for patients with diabetes, heart disease,
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`and other chronic disorders”).
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`Dr. Stone himself even testified that there was a long-felt need for the
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`claimed inventions of the ’192 patent. See Ex. 2069, 835:23-836:7, 1302:24-
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`1303:19; Ex. 2009, 27:1-9, 34:14-35:1, 49:17-20, 59:22-60:1, 76:18-77:5, 90:21-
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`91:24, 103:4-6, 438:22-439:3. The totality of this evidence provides a more than
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`sufficient nexus to the claimed inventions, and thus clearly distinguishes the cases
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`that Cardiocom relies upon. See, e.g., Ormco Corp. v. Align Tech., Inc., 463 F.3d
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`1299, 1312 (Fed. Cir. 2006) (patentee’s witnesses “testified that commercial
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`success was due to unclaimed or non-novel features of the device”); In re Paulsen,
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`30 F.3d 1475, 1482 (Fed. Cir. 1994) (finding insufficient evidence to establish
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`commercial success was not due to other extraneous factors).
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`C.
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`Cardiocom’s Arguments Are Legally Unsound and Ignore the
`Evidence Presented by Bosch and Dr. David.
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`Cardiocom ignores all of the contrary evidence discussed above and takes an
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`out-of-context quote from Dr. David’s deposition to suggest that he ignored the
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`real drivers of the success of the Health Buddy. Mot., 6 (citing David Dep. (Ex.
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`1041), 161:6-9). This is a gross mischaracterization of Dr. David’s opinions.
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`Initially, Cardiocom fails to disclose that Dr. David did not even understand the
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`question from Cardiocom’s attorney that elicited the testimony Cardiocom relies
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`upon. Ex. 1041, 161:10-17. More importantly, Dr. David actually testified the
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`opposite of what Cardiocom suggests, stating that “[w]hat was important for my
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`declaration is that nexus you described yourself relating to claims in the patent.”
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`Id., 160:25-161:3. Dr. David thus focused on success attributable to the claimed
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`invention and, having established that the nexus existed, did not attempt to analyze
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`every other factor that could have also possibly contributed to the success. See
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`also id., 160:2-18, 172:1-7, 621:3-15. Nor was he required to, as Federal Circuit
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`law does not require a patent owner to “prove as part of its prima facie case that the
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`commercial success of the patented invention is not due to factors other than the
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`patented invention. It is sufficient to show that the commercial success was of the
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`patented invention itself.” Demaco, 851 F.2d at 1394.
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`For the same reason, the Board should also reject Cardiocom’s argument
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`relating to the alleged contribution of the four-button design to the commercial
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`success of the Health Buddy. Mot., 5. Once Dr. David established a sufficient
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`nexus to the claimed inventions, he was not required to rebut all imagined
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`contributing factors. Demaco, 851 F.2d at 1394. Moreover, Cardiocom’s
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`contention that the years of praise, success, and long-felt need for the Health
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`Buddy is attributable solely to the four-button design is absurd. Indeed, the
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`absurdity of the claim is confirmed by the fact that Cardiocom has not come forth
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`with a single shred of independent evidence—articles, newscasts, webpages, or any
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`other objective evidence—tying the commercial success of the Health Buddy to the
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`four-button design. Instead, Cardiocom relies only on attorney argument,
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`supplemented with Dr. Stone’s declaration parroting those arguments without any
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`evidentiary support. See Paper 52, 4-5; Ex. 1022 ¶ 64. But as the Federal Circuit
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`has stated, such “‘argument’ and ‘conjecture’ are insufficient” to rebut evidence of
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`secondary considerations. Demaco, 851 F.2d at 1393 (quoting Rosemount, Inc. v.
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`Beckman Instruments, Inc., 727 F.2d 1540, 1546 (Fed. Cir. 1984)).
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`Cardiocom separately argues that Dr. David’s analysis of the commercial
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`success of Bosch’s Health Buddy was insufficient because there is no evidence
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`Health Buddy ever made a profit. See Mot., 6-7. Again, however, Cardiocom is
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`fabricating legal standards, because a “profitability analysis” is not an actual legal
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`requirement for assessing secondary considerations evidence.2 Notably,
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`Cardiocom never presented evidence demonstrating that Bosch was unprofitable,
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`2 In the single case Cardiocom cites, the district court did not even dismiss the
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`evidence of commercial success based on whether the evidence sufficiently
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`demonstrated profitability, as Cardiocom contends; rather, the evidence was
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`dismissed because there was no nexus between the success and the claimed
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`invention. Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed.
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`Cir. 1985), overruled on other grounds by Midwest Indus., Inc. v. Karavan
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`Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999). A nexus has been established here.
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`and the fact that the Health Hero business has been selling the Health Buddy for at
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`least the last 15 years belies Cardiocom’s assertion that the product was
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`commercially unsuccessful. Moreover, Dr. David demonstrated specific examples
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`of that commercial success, such as through hospitals and pharmacies adopting
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`usage of the Health Buddy. Ex. 2007 ¶ 79; Exs. 2011-2014. He also cited several
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`articles regarding substantial sales of the Health Buddy. See, e.g., Ex. 2055 (noting
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`that the VA had eight pilot projects costing $750,000 each); Ex. 2016 (stating that
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`Health Hero landed an additional $8 million in new financing for Health Buddy);
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`Ex. 2010 (noting that the VA awarded a new contract for the Health Buddy in
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`2011). This testimony and evidence is more than sufficient to demonstrate
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`commercial success and is unrebutted by any actual evidence adduced by
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`Cardicom.
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`At most, Cardiocom’s challenge goes to the sufficiency of the evidence;
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`such a challenge is not properly brought as an evidentiary objection. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48755, 48767 (Aug. 14, 2012) (noting
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`that a motion to exclude “may not be used to challenge the sufficiency of the
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`evidence to prove a particular fact”).
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`D.
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`Dr. David Properly Relied Upon Third-Party Statements to
`Support His Expert Opinions.
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`Cardiocom also seeks to exclude alleged “third-party hearsay evidence” that
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`Dr. David relies upon in forming his opinions of non-obviousness. Cardiocom
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`agrees that, under Federal Rule of Evidence 703, an expert witness such as Dr.
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`David may rely on hearsay evidence. Mot., 8. Cardiocom nevertheless argues that
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`Bosch’s secondary considerations evidence should be excluded because (1) Dr.
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`David’s secondary considerations analysis is fundamentally flawed, and (2) such
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`evidence is hearsay that should not be admitted as direct evidence of the truth of
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`the matter asserted. Id.
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`Cardiocom’s first argument is circular and must be rejected. Earlier in its
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`motion, Cardiocom argues that Dr. David’s opinions should be excluded as
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`fundamentally flawed because of the evidence he relies upon. Mot., 6-7.
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`Cardiocom goes on to argue that the evidence Dr. David relies upon should be
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`excluded because his opinions are fundamentally flawed. Id., 8. Cardiocom does
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`not get to assume its conclusion in order to justify its motion to exclude.
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`Cardiocom’s second hearsay argument must also be rejected for multiple
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`reasons. First, it fails because it challenges evidence as “hearsay” even though that
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`evidence is not offered for the truth of the matter asserted. See Fed. R. Evid.
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`801(c)(2). The proffered evidence is cited in connection with secondary
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`considerations factors such as praise from others, commercial success, and long-
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`felt need; these factors turn on public recognition of the claimed inventions, which
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`is demonstrated by the challenged evidence. Relying on evidence for this purpose
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`is a legitimate non-hearsay use. See, e.g., Hynix Semiconductor, 2009 WL 112834,
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`at *14 (“[T]he article does not constitute hearsay because it was admitted not for
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`its truth, but as a proper secondary consideration of nonobviousness in the form of
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`praise from others in the industry.”).
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`For example, Cardiocom complains of the alleged use of hearsay evidence in
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`Paragraph 88 of Dr. David’s declaration, where Dr. David discusses the
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`commercial success of the claimed inventions as evidenced by media coverage
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`about the Health Buddy product. Mot., 7. In providing this opinion, Dr. David
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`specifically relies on a news article titled “Health Hero Improves Patient Care With
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`Direct Provider Link.” Ex. 2020. In discussing the article, Dr. David does not rely
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`on the truth or accuracy of the statements made; rather, he relies on the statements
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`to demonstrate the secondary consideration of commercial success. Ex. 2007 ¶ 88.
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`As in the Hynix case, such evidence is not hearsay.3 Similarly, Dr. David relies
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`upon a VA solicitation (Ex. 2056) not for the truth of its contents, but rather to
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`3 Moreover, even if the Board entertained Cardiocom’s hearsay argument,
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`Cardiocom fails to acknowledge that Ex. 2020 is a periodical and thus falls under
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`the hearsay exception set forth in Fed. R. Evid. 803(18); other exhibits falling
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`under the periodicals exception include Exs. 2011-2017, 2019, 2021-2027, 2030-
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`2036, 2050-2055, and 2057. Cardiocom categorically ignores the hearsay
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`exceptions, making the sweeping (and incorrect) statement that all of Bosch’s
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`evidence “fall under no exceptions” to the hearsay rule. Mot., 8.
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`demonstrate an awareness by the market that the VA required others to copy the
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`scripting features that were first supported by the Health Buddy product. Ex. 2007
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`¶ 107; see also Ex. 1041, 621:24-625:15.
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`Aside from not constituting hearsay, the evidence that Cardiocom complains
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`about all is discussed as bases for Dr. David’s opinions of non-obviousness and is
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`not simply repeated verbatim for their truth. Bosch therefore does not rely upon
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`Dr. David’s declaration simply as a conduit to get in otherwise inadmissible
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`evidence. The case that Cardiocom relies upon is distinguishable on this basis.
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`See Vondrak v. City of Las Cruces, No. CIV 05-0172 JBLFG, 2007 WL 2219449,
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`at *3 n.4 (D.N.M. May 14, 2007) (Rule 703 “does not allow the proponent of the
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`expert testimony to use the expert as a conduit for a party to get in otherwise
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`inadmissible evidence”).
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`IV. CONCLUSION
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`For at least the foregoing reasons, Bosch respectfully requests that the Board
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`deny Cardiocom’s motion to exclude evidence.
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`Dated: August 13, 2014
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`Respectfully submitted,
`
`By:
`
`/Don Daybell/
`Don Daybell, Reg. No. 50,877
`Attorney for Patent Owner Robert Bosch
`Healthcare Systems, Inc.
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
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`The undersigned hereby certifies that the above-captioned PATENT
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`OWNER’S OPPOSITION TO PETITIONER’S MOTION TO EXCLUDE
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`EVIDENCE was served in its entirety on August 13, 2014, upon the following
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`parties via electronic mail:
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`Counsel for Petitioner
`
`Daniel W. McDonald
`Andrew J. Lagatta
`Merchant & Gould
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`CardiocomIPR@merchantgould.com
`
`By:
`
`/Karen Johnson/
`Karen Johnson
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